Introduction:
A Trademark refers to a mark that differentiates between goods and services of different traders. It is an essential element as it tells the customers about the uniqueness of the product and its source. As quoted by Phil Dusenberry, “a brand is nothing but an expression of consumer’s loyalty and trust,” it is important that trademarks are regulated. In India, trademarks are governed by the Trademark Act, 1999. A government agency, Controller General of Patents, Designs, and Trademarks administers the legal protection of Trademarks.
When an examiner receives a trademark registration, and he deems it to be suitable to be published in the trademarks journal, it gets advertised and published in the register of trademarks. This is done so that a third party can oppose such a trademark on appropriate grounds.
Trademark opposition refers to the process in which a third party files an objection about the registration of a trademark. In this case, the status of the trademark changes from “accepted & advertised” to “opposed”.
Who can Oppose Trademarks in India?
According to Section 21(1) of the Trademark Act, 1999[1] any natural person or legal person can oppose a trademark. These include:
- Partnership firms,
- Companies,
- Any individual persons,
- Trusts,
- Owner of a similar registered trademark, and
- A prior user of the trademark.
The person filing for the opposition of trademark is eligible if he does not have any kind of commercial interest in the affairs or a previously registered trademark in the registry.
Time Restriction for Trademark Opposition
A third party who wishes to oppose the registration of a trademark must do so within three months (extendable by one month) from the date of advertisement or re-advertisement of the trademark in the trademark journal[2]. If the trademark opposition is successful, the registration is refused.
Trademark opposition can be filed with the Registrar only. In no case, it can be directly taken to either IPAB or the Court. It is required to be filed according to the procedure established under The Trademark Rules, 2002.
Reasons for Trademark Opposition
The Indian Laws do not specifically talk about the grounds on which trademarks can be opposed by a third party. However, the grounds which are talked about are:
Absolute Grounds[3]
Trademarks that lack any unique features which are important to distinguish goods and services from that of the other traders are covered under Section 9(1) of the Trademark Act, 1999. Such trademarks can be opposed by a third party on this ground.
Relative Grounds[4]
If a trademark covers similar goods as that of a previous trademark, and public confusion is bound to arise due to this similarity, it can be opposed under Section 11(1) of the Trademark Act, 1999. If, however, a prior trademark is popular in India and it can be predicted that the use of a new one could lead to an unfair advantage or be harmful to the uniqueness or popularity of the earlier trademark, it will not be registered. This has been provided for under Section 11(2) of the Trademark Act, 1999. The grounds for determining the “popularity” of a trademark to be considered for this purpose are stated under Sections 6, 7, 8, and 9 of the Trademark Act, 1999.
Prohibitions[5]
The prohibitions under this section are related to names, which are either International Nonproprietary names or names of chemicals. This section prohibits names of chemicals that are ordinarily recognized and in use. It also prohibits names that are recognized by the WHO (World Health Organization) to be international nonproprietary names[6].
Absence of a Written Consent[7]
If a trademark closely represents the name of a living person or someone who died approximately twenty years ago, the applicant who applied for registration of trademark has to furnish written consent of the legal representative of the living or dead person as the case may be. In case of failure to produce such consent, the trademark can be refused.
Proprietorship Related Opposition[8]
A person who identifies himself to be the proprietor of a trademark and wants to register it must apply in writing to the registrar. The registrar has the discretion to accept it or refuse on appropriate grounds.
Contains Matters Likely to Hurt Religious Sentiments
In the case of Lal Babu Priyadarshi v. Amrit Pal Singh[9]The court held that the word “Ramayana” cannot be used as a Trademark. It can lose its significance as a holy book if it is used with a prefix or suffix.
Prohibited Under the Emblem And Names Act, 1950
Any mark which is prohibited by the Emblem and Names (Prevention of Improper use) Act, 1950, cannot be registered as a trademark.
In the case of Ravikanth Shinde v. Managing Director, Gujarat Heavy Chemicals Ltd., and Ors.[10]The respondent party was making kitchen salt. It contained the trademark “dandi” and had a pictorial representation of Mahatma Gandhi. The High Court of Andhra Pradesh, ordered to remove the usage of Gandhi Ji’s picture and the name Dandi, under the Emblem and Names (Prevention of Improper Use) Act, 1950. It was held that under the statute it cannot be used for a commercial purpose.
Trademark Opposition Process
Stage 1: Filing Stage
Step 1: Filing the Notice Of opposition
Opposition to Trademark is to be filed according to form TM -5[11]. The fee to file the opposition is 2500 Rs[12]. The place of filing opposition is the appropriate office where the registration of the trademark was filed[13].
Any person who wishes to file an opposition to a trademark needs to file a notice of opposition specifying the grounds of opposition and other valuable information. This must be filed within four months of publication of the trademark in the trademark journal. If the Registrar is satisfied with the opposition, he sends a copy of the notice to the applicant.
Step 2: Filing the Counter-statement
The applicant has two months from the date of receipt of the opposition notice, to file a counter-statement. In case of no reply from the applicant, the registrar considers the trademark registration as abandoned.
Stage 2: Evidence Stage
Step 1: Filing of Evidence in Support of Opposition
After receiving the counter-statement, the party which opposed the trademark must file evidence[14] in support of the grounds of opposition two months from the date of receiving the statement. The opponent can do away with filing supporting evidence and choose to only count on facts stated in the notice.
Step 2: Filing of Evidence in Support of the Application
The other party then files evidence supporting the application within two months under Rule 46 of The Trademark Rules, 2002.
Step 3: Filing of Evidence in Reply
The opposing party may even file additional supporting evidence to make their case stronger. This has to be filed within one month of receiving the evidence in support of the application or waiver[15].
Stage 3: Hearing
After completion of stage 2, a date of hearing is notified by the registrar to both parties. The parties can ask for an adjournment under Form TM-M. This request should be made at least three days prior to the date of the hearing. The maximum number of times a request for adjournment of hearings can be made is two and the maximum period for the same is thirty days.
Stage 4: Decision
After considering all the evidence and other information, the registrar decides as to opposition to a trademark. An appeal against the decision of the registrar can be made under the IPAB.
Form TM-5
Form TM- 5 is required to be filed under Rule 48(1) of Trademark Rules, 2002. The contents of this form include[16]:
- Information regarding the application of registration, against which the opposition has been raised by a third party,
- Facts related to the prior trademark on which the current opposition is based,
- Essential information related to the opposing party (proprietor/licensee/successor in title).
Differences Between Trademark Objection and Trademark Opposition
Trademark opposition and trademark objection are two different concepts. Trademark objection means a problem raised by the person who examines the trademark, whereas trademark opposition is an objection raised by a third party. On one hand, Trademark objection is a part of the trademark examination process and must be replied to within One Month of receiving it, and on the other hand, Trademark opposition comes after the examination process is complete and the trademark is advertised in the journal. Opposition to a trademark must be replied to within four months from the date of receiving it. There is no fee involved in trademark objection, whereas this is not the same in the case of trademark opposition.
Conclusion
It can be concluded that trademark objection and opposition are two different processes, and both occur at separate times. A trademark opposition is an objection raised by a third party. In India, Trademark opposition is considered a big hindrance. This is because even though our laws provide for well-structured procedures of opposition and registration, it is a very time-consuming process. The timelines for every party are also well defined under the law. There have been numerous instances of trademark opposition cases making newspaper headlines, because of their religious nature or similarity to an earlier popular trademark. Recently, there was a huge controversy between the Serum Institute of India and Custis Biotech regarding the trademark “covishield.”[17]Trademark opposition plays a key role by making third parties aware of their rights to oppose a mark on grounds stated under the statute.
References:
[1] Section 21 (1) Trademark Act, 1999.
[2] Section 21(1) Trademark Act, 1999.
[3] Section 9 Trademark Act, 1999.
[4] Section 11 Trademark Act, 1999.
[5] Section 13 Trademark Act, 1999.
[6] “International NonProprietary names programme and classification of medical products”, World Health Organization https://www.who.int/teams/health-product-and-policy-standards/inn (Last visited: 24 July, 2021)
[7] Section 14 Trademark Act, 1999.
[8] Section 18 Trademark Act, 1999.
[9] Civil Appeal No. 2138 of 2006.
[10] 2003 (4) ALD 400.
[11] Section 21(1) & Rule 47(1) Trademark Act, 1999.
[12] 1st Schedule, Entry No. 12 of Trademark Rules, 2002.
[13] Rule 8(1) Trademark Rules, 2002.
[14] Rule 45 Trademark Rules, 2002.
[15] Rule 47 Trademark Rules, 2002.
[16] “Manual of Trade Marks”, Government of India, Ministry of Commerce and Industries 105 (2015) https://ipindia.gov.in/writereaddata/Portal/IPOGuidelinesManuals/1_32_1_tmr-draft-manual.pdf (Last Visited: July 24, 2021).
[17]Omkar Gokhale. “Bombay HC refuses to restrain SII from using Covishield trademark, junks plea by Cutis Biotech” April 21, 2021 https://indianexpress.com/article/cities/mumbai/hc-refuses-to-restrain-sii-from-using-covishield-trademark-junks-plea-by-cutis-biotech-7282128/ (Last visited: July 24, 2021).
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